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PTO enjoined - new continuation / claim rules will not take effect November 1

In response to arguments set forth by GlaxoSmithKline (GSK), the US District Court of Eastern Virginia has enjoined the PTO from implementing the new patent prosecution rules. The rules were to take effect November 1, 2007, and would have applied retroactively to certain pending patent applications.

GSK asserted that implementing the new rules exceeded the PTO's authority, that the rules constituted an unconstitutional taking, and were in other ways inconsistent with US laws. A number of other parties, including IBM and the American Intellectual Property Law Association, filed briefs in support of GSK's request for an injunction.

The District Court concluded:

"For the reasons stated above, the Court will: (1) grant GSK’s Motion for a Preliminary Injunction; (2) deny the PTO’s Motion to Strike Exhibit E of the Memorandum in Support of GSK’s Motion; (3) grant the Motion of Amicus Curiae AIPLA for Leave to File its Brief in Support of GSK’s Motion; (4) grant HEXAS, The Roskamp Institute, and Tikvah’s Joint Motion in Support of Motion for Leave to File Amici Curiae Brief in Support of GSK’s Motion; and (5) grant the Motion of Amicus Curiae Elan Pharmaceutical Corp. for Leave to File its Brief in Support of GSK’s Motion."